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The US Court of Appeals for the Federal Circuit has upheld the validity of four software patents as the meaning of the Alice v CLS Bank test continues to challenge judges.
In the 2-1 ruling, issued on 1 November, the Federal Circuit overturned a US District Court for the Eastern District of Virginia decision that patents for a system designed to solve an account and billing problem faced by network providers were invalid in the litigation between internet and telecomms provider Amdocs and rival Openet Telecom.
Judges Pauline Newman and Jay Plager wrote the majority opinion in favour of Amdocs, but Judge Jimmie Reyna dissented, claiming that the Federal Circuit needs to clarify what is meant by an ‘abstract idea’.
Amdocs accused Openet of patent infringement in 2010, but Openet answered with a counterclaim, alleging invalidity, unenforceability and non-infringement. The court granted Openet’s motion for summary of judgement of non-infringement. Amdocs then appealed to the Federal Circuit.
During the litigation, the Supreme Court issued its opinion in Alice Corp v CLS Bank, following which Openet moved for judgement on the pleadings by arguing that all claims were ineligible under Section 101 of the Patent Act and the two-part test laid down in Alice.
Under the Alice test, the district court must first decide whether the claim is directed to a patent-ineligible concept.
It must then determine whether any element of the claim is enough to ensure that it covers something more than the abstract idea that is prohibited.
The Eastern District of Virginia district court granted Openet’s motion for judgement under Alice, finding that Amdocs’s patents were not directed to patent-eligible subject matter under Section 101.
But Federal Circuit Judges Newman and Plager said that while the components and functionality involved “may be generic at first blush, an examination of the claim in light of the written description reveals that many of these
components and functionalities are in fact neither generic nor conventional individually or in ordered combination.”
“They describe a specific unconventional technological solution, narrowly drawn to withstand preemption concerns, to a technological problem.”
This Federal Circuit decision follows two rulings in Enfish and McRO that have further defined the case law established in Alice.
Judges Newman and Plager were in agreement on the case, but Judge Reyna stated in his dissent that they had avoided “determining whether the asserted claims are directed to an abstract idea, or even identifying what the underlying abstract idea is”.
“Declining to engage in the step-one inquiry also ignores and undermines this court’s holdings in Enfish v Microsoft and McRO v Bandai Namco,” Judge Reyna argued.
Federal Circuit rules again on software patents
Turn to p10 to find out more about the implications of recent software patent cases.
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Contents Latest NewsHedge fund manager Kyle Bass wins a US Patent Trial and Appeal Board decision invalidating the claims of a patent covering Shire’s short bowel syndrome drug, Gattex
Page 3
Latest NewsThe US Court of Appeals for the Federal Circuit backs a district court’s construction of a patent for a footwear insert device, finding that it correctly used the specification and prosecution history to define the components as a key part of the protected invention
Page 5
Patent ProfileMinesto unveils its submersible power plant, Panasonic patents a toilet and IoT technology, and LG works towards a fully realised 3D camera
Page 8
UPC InsightRichard Vary, partner at Bird & Bird, explains the possible ramifications of Brexit on UK patenting
Page 10
Software PatentsThe Supreme Court’s decision in Alice v CLS Bank provided a test for the eligibility of software inventions for patents, but courts continue to argue over its application
Page 11
People MovesPromotions at Bristows and Marks & Clerk dominate the headlines
Page 16
NPEs drive sustained litigation
Non-practicing entities (NPEs) continue to drive high levels of patent litigation, according to an RPX Corporation report.
The report, released in October, showed that NPE litigation activity remained high between Q2 2016 and into Q3, despite a slight drop of around 100 defendants.
RPX showed that this activity was primarily driven by “familiar faces”, including Shipping & Transit, SportBrain Holdings and T-Rex Property.
The report said: “Collectively, these top ten NPEs alone have filed suits targeting more than 400 operating companies so far in 2016.”
The report also outlined NPE successes in the courts, citing a $22 million verdict issued against Apple and brought by Cellular Communications Equipment, and a $302 million verdict against Apple by VirnetX Holding Corporation.
NPEs have also continued to gain new portfolios, according to the report, with entities controlled by Monument Patent Holdings and IP Edge assigned messaging and communication patents.
These two entities have collectively filed more than 280 infringement cases in 2016.
IP is a high earner in the EU, find top agencies
Over 42 percent of total economic activity in the EU is generated by intellectual property rights-intensive industries, according to a study from the European Patent Office (EPO) and the EU IP Office (EUIPO).
The study, published on 25 October, says this number equates to almost €5.7 trillion annually. It covers a broad range of IP rights, including patents, trademarks, designs, copyright, geographical indications and plant variety rights.
Further, the study says that IP-intensive industries account for almost 90 percent of the EU’s global trade and 38 percent of all employment in the EU comes from industries with above-average use of IP rights.
These 82 million IP rights-intensive jobs also have a 46 percent higher average wage than other industries.
Almost half of all EU industries are IP rights-intensive and focus mainly on engineering, real estate, and financial and insurance activities, along with the
manufacture of motor vehicles, computers and pharmaceuticals.
“Our second joint report confirms the benefits of patents and other IP rights for the European economy,” said Benoît Battistelli, president of the EPO.
“Intangible assets are increasingly important for innovative companies today, especially small and medium-sized enterprises (SMEs), but also for research centres and universities.”
He added: “We again see that this has a positive impact on jobs, growth and prosperity. But in order to remain competitive in the global economy, Europe needs to encourage even further the development and use of new technology and innovations.”
António Campinos, executive director of the EUIPO, commented: “The rapidly changing nature of business in the 21st century means that the EU and global economy relies strongly on IP rights such as trademarks, designs, patents and other rights.”
“The current report shows this reliance is continuing to grow and that these rights are often used inter-dependently.
“This poses the challenge of ensuring that IP rights are more accessible to all businesses, including SMEs, and are protected effectively against infringements, in order to help the EU to retain its innovative strengths and further leverage jobs and growth.”
NobelBiz wins $2.2 million in damages from rivals
Customer contact center provider NobelBiz has been awarded $2.2 million in its patent infringement lawsuit against rivals Global Connect and TCN.
The ruling, which was issued in the US District Court for the Eastern District of Texas on 27 October, followed post-trial motions and upheld a 2015 jury verdict in favour of NobelBiz.
Judge Robert Schroeder upheld the validity of NobelBiz’s patents for systems and methods for modifying communication information and ruled that Global Connect and TCN had wilfully, directly and indirectly infringed them.
The district court awarded $1.5 million in damages, as well as enhanced damages due to Global Connect and TCN’s wilfulness, and costs and expenses, bringing the total up to $2.2 million.
TCN was also permanently enjoined from further infringement.
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BMW ignores infringement red light
BMW has infringed two patents relating to smart home technology and mobile applications, according to a lawsuit filed by West View Research in California.
The complaint, filed in the US District Court for the Southern District of California on 17 October, alleges that despite BMW’s knowledge of the existence of the patents, “[BMW] continues to encourage, instruct, enable and otherwise aid and abet third parties ... in a manner that directly infringes”.
West View alleged that BMW infringed the patents through its vehicles, services and software, including its BMW Assist, Online and iDrive products, and through a partnership with Samsung in vehicle/smart home integration.
“[BMW] knew and know that their actions ... would induce, have induced and continues to induce direct infringement of the patent[s],” West View claimed in its complaint.
It said that the acts of patent infringement are causing “irreparable harm” to West View and will continue to do so until BMW is prohibited from infringing.
West View initiated a separate action against BMW in 2014, in which it alleged infringement of several patents, but the case is still pending at the date of publication of this issue.
West View is an inventorship and patent licensing company located in San Diego, California, according to its website.
Its patent portfolio consists of numerous issued patents and pending applications including “groundbreaking” tech relating to speech recognition, mobile wireless devices, radio frequency identification/near-field communication, wireless payment, telematics, advertising, maps and navigation, ‘smart’ shipping technology, elevators, and medical devices.
Bass secures a PTAB victory
Hedge fund manager Kyle Bass has won a US Patent Trial and Appeal Board (PTAB) decision invalidating the claims of a patent covering Shire’s short bowel syndrome drug, Gattex.
The 21 October decision ends a year-long inter-partes review process started by Bass and the Coalition for Affordable drugs last
year, which resulted in a review of all claims of the patent on the ground of obviousness.
All instituted claims were held to be unpatentable by the PTAB.
The PTAB upheld the validity of another Shire patent protecting its ulcerative colitis drug, Lialda, in October.
In that case, Bass and his Coalition for Affordable Drugs also filed the petition of review, but the PTAB found that the patent was valid.
Duane Morris opens doors in Taiwan to target biotech and pharma
Law firm Duane Morris has opened an office in Taiwan to focus on intellectual property for the high-tech pharmaceutical and biotechnology industries.
Richard Thurston, of counsel at Duane Morris, will work in the firm’s Taiwan and New York offices. Thurston will be joined by Christopher Neumeyer as special counsel, and Cheng Hsiang Chu.
John Soroko, CEO and chairman of Duane Morris, said: “Our new Taiwan office is a
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logical next step in the long-term strategy for our international operations and our continued growth in Asia.”
Soroko added: “We already have extensive experience working with Taiwan-based multinational companies, and our global platform will help facilitate the business of Taiwanese companies operating cross-border with focus on the US.”
US Federal Circuit backs Merck in footwear dispute
The US Court of Appeals for the Federal Circuit has backed a district court’s construction of a patent for a footwear insert device, finding that it correctly used the specification and prosecution history to define the components as a key part of the protected invention.
The Federal Circuit’s decision, issued on 26 October, upheld the US District Court for the Northern District of Illinois’s ruling of non-infringement in favour of pharmaceutical company Merck.
ProFoot, a foot care specialist, accused Merck of infringing its patent for a high
performance ‘foot bed’ for sports equipment (US 6845568).
The device is used to provide custom footwear inserts for sports that involve symmetrical, side-to-side movement, such as skiing, skating and cycling.
At the centre of the dispute was the invention’s “neutraliser”, into which an athlete puts one foot in at a time so that a fitting specialist can determine what angle the foot should be in to place the ankle in a “neutral position”.
The ’568 patent touts that ProFoot’s solution is superior to the prior art, because it determines this “relaxed position” while an athlete is standing on one foot, instead of on two.
Ruling on the case in June last year, the district court construed “neutraliser” as “a device that has a housing, a protractor, and an angularly adjustable plate capable of supporting the foot”.
A “neutral position” was construed as “a position in which [the] subtalar joint is in the relaxed position due to the lack of pronation or
supination”. The district court subsequently issued a ruling of non-infringement in favour of Merck on all claims.
On appeal, ProFoot argued that the district court relied too heavily on the specification and prosecution history of the patent when conducting claim construction, leading it to define the components as a key part of the protected invention.
“In ProFoot’s view, this construction is too narrow because the claims are silent as to what components comprise the neutraliser, and a person of ordinary skill in the art would recognise that a ‘neutraliser’ is simply just some kind of measuring device,” the Federal Circuit explained.
But the district court had a duty to review the claims in the full context of the patent, including its specification and prosecution history, the Federal Circuit ruled. “Although ProFoot is correct that the asserted claims do not recite the specific components that comprise the neutraliser, we agree with the district court that, when read in the context of the ’568 patent, this term requires a device that includes these components,” the Federal Circuit explained.
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Pure settles with Dell EMC over data storage
Pure Storage and Dell EMC have settled their pending patent infringement lawsuit.
The settlement comes after a $14 million award in favour of Dell EMC was overturned.
Pure Storage said in a statement that the specific terms of the deal are confidential, although the agreement does include the dismissal of all litigation between the parties and a licence for the disputed patent.
Pure Storage was accused of infringing five patents belonging to Dell covering data storage and RAID technology.
A jury in the US District Court for the District of Delaware threw three of the claims out and one was dropped by Dell EMC.
Dell EMC was then awarded $14 million in March for Pure Storage’s infringement of its efficient data storage system patent.
Later, the judge in the case ruled that the jury hadn’t considered that the patent was invalid due to an earlier patent issued to Sun Microsystems, and set aside the $14 million award.
Eversheds strengthens Finnish IP practice with IPR Partners
Eversheds subsidiary Heinonen & Co has acquired the patent filing business of Finland-based IPR Partners.
The merger will grow Heinonen’s team by nine patent attorneys and IP professionals and bring the total number of full-time IP staff to 40 in Evershed’s Helsinki office.
Harri Tolppanen, managing partner at Eversheds, said: “Through this merger, our strong know-how in the field of IP rights expands even further.”
Petteri Häkkänen, who will become the new managing partner of Heinonen & Co, said: “We are the only Finnish law firm which offers all industrial property rights consultancy and protection services under one roof.”
“Our services are fully compliant with Eversheds’s international law practice, providing a seamless, fully integrated law service across all jurisdictions and territories,” Häkkänen added.
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The World Intellectual Property Organization (WIPO) has unveiled a new artificial intelligence-based translation tool for patent documents.
WIPO Translate uses “cutting-edge neural machine translation technology” to translate patent documents into a second language, such as Chinese.
It will begin with translating Chinese, Japanese and Korean patent documents into English. WIPO said that patent applications in these languages accounted for 55 percent of worldwide filings in 2014.
WIPO director general Francis Gurry said: “One of the aims of the patent system is to make technology available.”
“Language is a barrier to the universal achievement of that aim. This breakthrough for WIPO Translate means that a vast, and ever-increasing, trove of patent documents will soon be more easily accessible to innovators who search these records of inspiration or technical know-how.”
He added: “As part of a global trend, patent applications are increasingly being filed in East Asian languages, particularly in Chinese, and WIPO Translate helps ensure that state-of-the-art knowledge created in these languages is shared as widely and rapidly as possible.”
WIPO Translate is WIPO’s own software and based on open-source software such as Nematus – Theano and AmuNMT.
WIPO develops AI translation tool
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Patent ProfileBarney Dixon reports
Minesto unveils its submersible power plant, Panasonic patents a toilet and IoT technology, and LG works towards a fully realised 3D camera
Flush with patents
Have a patent we should shout about? Let us know via: [email protected]
Minesto
Marine energy technology company Minesto recently received a promise of grant for a host of patents from the European Patent Office (EPO).
The patents will cover Minesto’s Deep Green technology, which relates to its submersible power plant. Deep Green aims to reach speeds 10 times higher than the water current and provide 1,000 times more power.
Minesto’s main European patent (CA 2936789) for the submersible power plant described it as comprising “a structure and a vehicle”.
“The vehicle is arranged to be secured to the structure by means of at least one tether. The vehicle is arranged to move in a predetermined trajectory by means of a fluid stream passing the vehicle.”
“The vehicle comprises a first wing and a second wing, where the first wing is arranged at a first distance from the second wing in a longitudinal direction, and the first wing is arranged at a second distance from the second wing in a lateral direction.”
Minesto has been granted 17 patents so far for its Deep Green submersible power plant technology.
Panasonic
Panasonic’s patent (US 0312457) for a flushing toilet may smell a little funny given that the flush toilet was first invented in 1596 by John Harington, but the electronics company’s 2016 update aims to make the business of doing your business much more environmentally friendly, for the planet that is.
The unique selling point of this invention is its ability to clean the toilet using only “a small amount of washing water ... at a low pressure”.
In its patent application, Panasonic said the invention has been made in view of the water waste problems of conventional flush toilets: “An object of the present invention is to provide a flush toilet in which a bowl inner surface can be washed with a water amount that is smaller ... or at a lower water pressure than that of a conventional flush toilet.”
Panasonic’s inventive prowess is not limited to toilets, however. Another of the company’s recent innovations is a progressive step forward towards the internet of things (IoT).
The patent (US 311348) relates to a passenger seat pairing system or, in layman’s terms, a system for connecting a personal electronic device wirelessly to a passenger seat in a vehicle.
The invention aims to give its users the ability to control passenger in-seat functions, such as entertainment systems, seat adjustments and environmental systems in the vehicle.
This sort of invention has exciting applications for IoT and making more devices interactive.
In its application, Panasonic referenced the idea of planes, passenger trains, buses and cruise ships all having individualised, functional equipment dedicated to a single passenger, hinting at potential uses for such an innovation on a day-to-day commute.
LG Electronics
A new patent (US 0316189) from LG aims to protect a 3D camera capable of taking high-quality, stereoscopic pictures that capture a left-view image and a right-view image at the same time.
LG argued in its application: “Recent 3D cameras are constructed to capture a left-view image and right-view image simultaneously through ... one device.”
“However, the stereoscopic-type 3D camera causes a quality related problem due to an assembly error between the two cameras.”
LG is attempting to change this with its invention.
Its camera’s optical paths can be changed in response to a movement of the camera by use of a variable prism or a tiltable mirror, which will provide higher quality 3D images.
Further, LG said its invention can generate a stereoscopic image without synchronising a shutter unit with an image sensor and splitting images.
It said this may result in the creation of a 3D zooming function. IPPro
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What are the potential consequences of the UK’s Brexit vote on both the UPC and the unitary patent in general?
The UK’s vote to leave the EU has thrown a bit of a spanner into the works. Just when the Unified Patent Court (UPC) appeared to be on track, and in a form that was largely accepted within the mobile telecoms industry, Brexit came as something of a surprise.
There seem to be three options from here. The first possibility is that the whole idea will collapse. The UPC Agreement was a compromise between different views across different industries, and re-opening the agreement in order to remove the UK’s participation might allow industry participants to seek to renegotiate the parts they liked least.
The result might be that no new agreement can be reached. That would be sad for those who have worked so hard over the last few years to make this reality, and it loses a chance for us to build a system that could be much more attractive than the US or other patent litigation systems.
Another option is that the UPC goes ahead without the UK being involved. A third option would be for the UPC Agreement to be amended to allow the UK to participate even after it has left the EU. That opens the exciting possibility of making the UPC accessible to all European Patent Convention (EPC) member states, not just those in the EU.
Much of the opinion heralds doom and gloom. Will there be any benefits for the UK in terms of patenting if it stands outside the unitary system?
One might expect the most pessimistic outcome for the UK to be having it go ahead without the UK involved. With a unitary patent system on our doorstep, and covering so much of the global market, some patent portfolio managers may take the decision not to incur the extra costs of covering the UK as well. And you might wonder why patent owners litigate in England and Wales when an action under the UPC could result in a quicker, cheaper decision applying to a much larger market.
But there is also an opportunity here. Our German colleagues have shown that the way to attract a lot of patent litigation in the high-tech industry is to conduct it efficiently. If a litigation system is fast, high-tech patent owners will file litigation in that country because they want to win the race to a remedy—they want cases against their opponent to reach trial before the opponent’s. And if a country’s litigation system is fast and efficient, portfolio managers will ensure that their portfolios cover that country.
So, if the UK does find itself left on the dockside when the UPC ship sales, the UK’s patenting profession has a very real opportunity to attract work. If we can make our system faster and more efficient than the UPC system, we have a very real prospect of increasing the levels of patenting business and patent litigation business in the UK. If our system is slower and more expensive than the UPC, yet covers a far smaller market, it will be unattractive for industry and the outlook for UK patenting will be bleak.
How far will intellectual property go when leveraging the ‘best deal’ for the UK?
I would like to think it will be the key point that drives the negotiations. But the reality is that it will be at the bottom of the pile. Free movement of goods, free movement of workers, fishing, farming and the financial services industry will all be higher on the agenda.
Given that the UK seems to be heading away from the CJEU, what systems will the UK put in place to account for this loss?
It is difficult to see how we could remain part of the UPC without accepting the Court of Justice of the EU (CJEU). It is harder still to see how that could be politically acceptable under the current government. I would like to see a UPC that covers all EPC countries, without being subject to the jurisdiction of the CJEU, although that also seems unlikely.
But if the UK goes it alone, then the loss of the CJEU is unlikely to be noticed or particularly significant. It might even be welcomed by the trademark profession. IPPro
Richard Vary, Partner, Bird & Bird
It is difficult to see how we could remain part of the UPC without accepting the Court of Justice of the EU
Richard Vary, partner at Bird & Bird, explains the possible ramifications of Brexit on UK patenting
A spanner in the works
Brexit InsightBarney Dixon reports
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Following the 2014 US Supreme Court decision in Alice v CLS Bank, ‘abstract ideas’ became words to fear in software patenting and litigation. Since Alice was handed down, decisions in favour of the validity of software patents have become rare, casting doubt over the eligibility of software inventions for patent protection.
Crucially, the Alice decision didn’t bar software from patent protection, but a new two-part test was fashioned to give district courts better guidance on evaluating claims against the exceptions outlined in Section 101 of the Patent Act.
The Supreme Court’s two-part test stressed that the district court, when considering patent eligibility, must decide whether the claim is directed to a patent-ineligible concept such as an abstract idea, and then determine whether any element of the claim is enough to ensure that the claim covers something more than the judicial exception (see box-out for expanded version of test).
In September of this year, the Court of Appeals for the Federal Circuit issued a ruling in McRO v Bandai Namco Games America, a much-anticipated patent infringement lawsuit relating to a way of automating a 3D animation method.
The invention essentially automates lip synchronisation of animated characters so that their speaking appears realistic, genuine and allows for lip reading. Initially, the case was decided in the US District Court for the Central District of California in September 2014, where the analysis adopted by the Supreme Court in Alice was used to decide that the patents at issue were unpatentable subject matter, as their claims were directed to an abstract idea.
Judge George Wu said that the patents were invalid under the analysis because they simply automated animation processes using a computer.
But the Federal Circuit reversed Wu’s decision and found that the claims were directed towards patentable subject matter and had passed the first step of the Alice analysis, ruling that the invention was a patent-eligible process for automatically animating characters.
Alice and subsequent decisions had shown that automating a process via a computer is not enough to give the claims a patent-eligible status. But the Federal Circuit’s decision in McRO clarified this and provided further explanation.
The Federal Circuit warned the lower court to avoid “oversimplifying the claims” and that the patent “focused on a specific asserted improvement in computer animation”.
It said: “We disagree with [defendant] Bandai Namco’s arguments that the claims simply use a computer as a tool to automate conventional activity.”
“While the rules are embodied in computer software that is processed by general-purpose computers, Bandai Namco provided no evidence that the process previously used by the animators is the same as the process required by the claims.”
Mark Raskin, partner at Mishcon De Reya, who served as trial counsel for McRO, says the decision is a “clear signal that software is patentable—where properly claimed”.
“Software developers who want patent protection for their inventions have another schematic for how to craft a specification and set of claims that is more likely than before to be allowed by an examiner. Had this decision gone the other way, many in the industry feared that allowance of software patents would be even rarer than it has been since Alice.”
A month later, the decision in McRO was used in conjunction with Alice as case law, formulating the opinion in FairWarning IP v Iatric Systems, which was decided in October.
The case should also affect the US Patent and Trademark Office’s (USPTO) Section 101 patent eligibility guidelines, according to Raskin. He says that it may result in examiners viewing claims as an “ordered combination” during the Section 101 analysis, as well as resulting in increased importance and applicability in “non-preemption” arguments. Additionally, “the application of a ‘genus’ approach to rule-based claims should also likely give patent prosecutors more flexibility”.
David Kappos, partner at Cravath, Swaine & Moore and former director of the USPTO, says that the McRO decision can further inform the USPTO’s analysis, and can be used “as an opportunity for the agency to refine its guidance and apply such guidance to ensure that meritorious inventions are not denied patent protection”.
The USPTO offered preliminary guidance on subject matter eligibility following the decision in McRO, as well as BASCOM Global Internet Services v AT&T Mobility, on 2 November. Its memorandum said that these decisions do not change the basic subject matter eligibility framework, but provide additional information about finding eligibility in software claims. Further, it used McRO as a basis for extended patent prosecution advice, stating: “Examiners should consider the claim as a whole under Step 2A of the USPTO’s subject matter eligibility guidance, and
Software PatentsBarney Dixon reports
The Supreme Court’s decision in Alice v CLS Bank provided a test for the eligibility of software inventions for patents, but courts continue to argue over its application
Abstracting justice
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should not overgeneralise the claim or simplify it into its ‘gist’ or core principles, when identifying a concept as a judicial exception.” “An ‘improvement in computer-related technology’ is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of ‘rules’ (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.” The USPTO also looked at the decision in BASCOM, in which the Federal Circuit vacated a judgement and argued that a district court failed to properly perform the second step of the Alice test. It said: “In Step 2B of the USPTO’s subject matter eligibility guidance, examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the non-conventional and non-generic arrangement of known, conventional elements.”
Despite the moves to clarify eligibility, not all think that software patents should be given these assurances. In a patent infringement lawsuit between Intellectual Ventures and Symantec, decided in September, Judge Haldane Robert Mayer said that patents are a “terrible fit” for software.
Judge Mayer said: “It is well past time to return software to its historical dwelling place in the domain of copyright.”
“[A] problem with software patents is that they provide incentives at the wrong time. Because they are typically obtained at the ‘idea’ stage, before any real inventive work has been done, such patents are incapable of effectively incentivising meaningful advances in science and technology.”
His argument centres on the First Amendment. He said: “Essential First Amendment freedoms are abridged when the USPTO is permitted to Balkanize the internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.”
Raskin says that while Judge Mayer’s First Amendment argument is interesting, it’s unconvincing. “While he directs it to software patents, the fact remains that the underlying basis for his arguments can be applied to many different technological areas that are clearly patent-eligible. His argument could apply to internet switching technologies or mobile phone technologies just as easily as software.”
He adds: “Besides, any engineer can tell you what is embodied in hardware can be executed in software, and vice-versa. And no one argues that a hardware implementation would be unpatentable.”
One step forward, two steps in factThe first step of the Alice test asks “whether the claims [of the patent] at issue are directed to a patent-ineligible concept”, such as an abstract idea. If not, the claims are patent-eligible. But if the claims are directed to a patent-ineligible concept, one moves on to the second step of the Alice test. The second step asks whether the claims include “significantly more” than the patent-ineligible concept to “‘transform the … claim[s]’ into a patent-eligible application” of the patent-ineligible concept. If so, the claims are patent eligible, and vice-versa.
Providing his insight, Kappos says: “I see no more need to discriminate against algorithmic inventions that may happen to be implemented in software, than against any other algorithmic invention—like the algorithm implemented by a mechanical cam. Software is merely a medium of expression—a language for describing algorithms.”
“It makes no more sense to discriminate against process inventions that are described in software than it does to discriminate against inventions that are described using French, or Chinese, or English. We need to move beyond the form and focus our energies on the substance—the inventiveness and clarity of the algorithm.”
Despite these cases offering interpretations of the Alice decision, Raskin doesn’t believe that they will have much significance.
He says that Alice will remain the key case for how to determine whether an invention is directed to ineligible subject matter.
Kappos, however, is positive that future decisions will “continue to build on McRO, providing patent protection to important technical inventions implemented in software”.
“The McRO decision adds helpful interpretation to Alice on the part of the Federal Circuit, guiding the district courts, the USPTO and patentees regarding subject matter eligibility under section 101.”
Until then, Raskin says that patent applicants should bear in mind that combinations of hardware-plus-software claims are more likely to get approval than purely software claims.
Kappos recommends utilising claim language that “reflects the positive decisions like McRO” and “be specific in claims, especially regarding the substance of the invention, and provide a complete, clear specification that fully describes the invention for which protection is sought”. IPPro
We need to move beyond the form and focus our energies on the substance, which is the inventiveness and clarity of the algorithm
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BRICS Intellectual Property Forum
Location: London
Date: 21-22 November 2016
South African intellectual property law firm Adams & Adams is hosting this year’s conference of the BRICS Intellectual Property Forum in London on 21 and 22 November 2016. This year marks the eighth successive year of the conference and the first time that it will be presented in London.
IP Summit
Location: Brussels
Date: 1-2 December 2016 Delegates will hear from key company representative speakers on the current issues in the trademark, copyright, patent and design fields with a special focus on counterfeiting and litigation practice.
For more events visit www.ipprotheinternet.com/events/events.php
For more events visit www.ipprotheinternet.com/events/events.php
SINGH SINGH LALL SETHI
OFFICE: D – 17, SOUTH EXTENSION – II, NEW DELHI - 110 049 INDIA
P: +91 11 4289 9999 F: +91 11 4289 9900 E: [email protected]
BITIKA SHARMA PARTNER
SUDEEP CHATTERJEE PARTNER
TEJVEER SINGH BHATIA PARTNER
CHANDER LALL SENIOR PARTNER
RAGHAV MALIK PARTNER
TIA MALIK PARTNER
SAYA CHOUDHARY PARTNER
ANJU KHANNA PARTNER
JYOTIDEEP KAUR PARTNER
MEMBERS
100 Member Law Firm
PRACTICE AREAS
Prosecution & litigation of matters related to Trademark,
Copyright, Patent, Geographical Indicators,
Designs, Telecom Law and Policy Making Widely appreciated
for quality services.Recipient of several
national and international accolades and
recognition in last one decade
COUNTRIES
In addition to India the firm has
strong international presence in
SAARC countries
COMPETITIVE EDGE
IP power house with IP Litigation and filing and prosecution capability
In‐house developed IP Management Software equipped to handle all aspects of IP
management, relationship management, and transparent billing practices
Represent almost of the Patent 90%Litigation cases and of the IP Litigation 30%
cases of the country
In‐house is the USP. Litigation Capability
INDUSTRY SECTORS
Pharmaceuticals, FMCG, Entertainment, IT,
Beverages, Banking, Telecommunication, Cosmetics, fashion
& others
92mm wide by 83mm
187mm wide by 133mm high.
16
People Moves
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Deputy Editor: Stephanie [email protected]+44 (0)203 750 6019
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Contributors: Becky Butcher and Drew Nicol
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Bristows has promoted joint head of patent litigation, Edward Nodder, to senior partner of the firm following the retirement of Philip Westmacott.
Nodder has worked at Bristows for more than 30 years and has been responsible for more than 100 patent cases.
He is experienced in multiple technical fields, but is most active in the life sciences sector and has acted for some of the largest pharmaceutical, biotechnology and medical devices companies.
Westmacott was at Bristows for 38 years and has advised on many high-profile IP and IT disputes.
As well as Nodder’s promotion, Bristows has named Marek Petecki as new joint managing partner, succeeding Mark Watts who steps down from the position after six and a half years.
The firm has also has promoted Richard Pinckney to partner in its patent litigation team.
Marks & Clerk has promoted five attorneys to partner across its UK offices, as well as in Hong Kong and Singapore.
Graham McGlashan, Mike Williams and Dafydd Bevan have become partner in the firm’s Glasgow, Manchester and London offices, respectively.
McGlashan’s practice focuses on patent and design matters, covering a wide range of industries, including electronics, telecoms, energy, automotive and software.
Williams specialises in patent matters relating to computer software, computer hardware and business methods.
Both McGlashan and Williams are UK-chartered and European patent attorneys.
Bevan works on the enforcement and commercialisation of IP, including patents, designs, trademarks, copyright and confidential information.
Across its Asia offices, Cynthia Houng and Upasana Patel have been made partner in Hong Kong and Singapore, respectively.
Houng is a trademark attorney and focuses on brand clearance, portfolio management, prosecution, opposition and more.
Patel specialises in chemical and process engineering, biopharmaceutical engineering, and pharmaceutical, nano- and clean technology.
Maureen Kinsler, chairman of Marks & Clerk International, said: “Each of them is well known for the quality of advice they give to their clients and their commercial approach to IP advice.”
“We look forward to benefitting further from their individual and unique experience, as they continue to help service our clients and grow our business.”
As well as the new partners, Mark & Clerks has promoted several patent attorneys in the UK to senior associate, including Jennifer Bailey, Matthijs Branderhorst, Mash-Hud Iqbal, David Grant and Rhyan Probert.
Gina Lodge and Rajesh Sagar were promoted to the position of managing associate at the firm. IPPro
